EXHIBIT 10.33
OEM SUPPLY & LICENSE AGREEMENT
This Agreement made this 15th day of June, 1999 ("Effective Date") is by and
between PerSeptive Biosystems, Inc., a Division of the PE Biosystems Business of
PE Corporation ("PerSeptive"), a Delaware corporation with a place of business
at 000 Xxx Xxxxxxxxxxx Xxxx, Xxxxxxxxxx, XX 00000 and Sequenom, Inc.
("Sequenom"), a Delaware corporation with a place of business at 00000 Xxxxxxxx
Xxxxxx Xxxx, Xxx Xxxxx, XX 00000.
RECITALS
PerSeptive has expertise in the development and manufacture of mass
spectrometry instrument workstations (the "Mass Spec Products"), and desires to
manufacture and sell to Sequenom Mass Spec Products.
Sequenom is desirous of purchasing certain Mass Spec Products from
PerSeptive for incorporation into system products to be sold by Sequenom, and in
connection with such sale to obtain from PerSeptive rights to market and resell
PerSeptive's Mass Spec Products to Sequenom's Customers.
PerSeptive is willing to supply Mass Spec Products to Sequenom and to grant
Sequenom rights to resell such products as part of its system product offering,
all in accordance with the terms and conditions set forth in this Agreement.
Based on the foregoing recitals and in consideration of the mutual
covenants and promises herein contained, the parties agree as follows:
1. DEFINITIONS For purposes of this Agreement and all Exhibits attached
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hereto, the following terms shall have the meaning set forth below:
1.1 "Affiliate" means with respect to either Party a person or entity,
including without limiting the generality of the foregoing, corporations,
partnerships and joint ventures, that directly or indirectly through one or
more intermediaries, controls, is controlled by or is under common control
with such person or entity. "Control" (and, with correlative meanings, the
term "controlled by" and "under common control with") means the possession
of the power to direct or cause the direction of the management and
policies of such person or entity, whether through the ownership of voting
stock, by contract or otherwise. In the case of a corporation, "control"
shall mean, among other things, the direct or indirect ownership of fifty
percent (50%) or more of its outstanding voting stock.
1.2 "Agreement" means this OEM Agreement, as amended from time to time.
1.3 "Agreement Year" means any twelve month period during the term of this
Agreement commencing on the Effective Date or any anniversary date thereof.
1.4 "Backorders" has the meaning set forth in Section 5. 1.
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1.5 "Confidential Information" means all materials, know-how or other
information, including, without limitation, proprietary information and
materials (whether or not patentable) regarding a Party's technology,
products, business information or objectives, which is designated as
confidential in writing by the disclosing Party, whether by letter or by
the use of an appropriate stamp or legend, prior to or at the time any such
material, trade secret or other information is disclosed by the disclosing
Party to the other Party. Notwithstanding the foregoing to the contrary,
materials, know-how or other information which is orally, electronically or
visually disclosed by a Party, or is disclosed in writing without an
appropriate letter, stamp or legend, shall constitute Confidential
Information of a Party (a) if the disclosing Party, within thirty (30) days
after such disclosure, delivers to the other Party a written document or
documents describing the materials, know-how or other information and
referencing the place and date of such oral, visual, electronic or written
disclosure and the names of the persons to whom such disclosure was made,
or (b) such information is of the type that is customarily considered to be
confidential information by persons engaged in activities that are
substantially similar to the activities being engaged in by the Parties
hereunder. Notwithstanding the foregoing, any technical or financial
information of a Party disclosed by PerSeptive to Sequenom or visa versa or
disclosed through an audit or sales report shall constitute Confidential
Information of a Party unless otherwise specified.
1.6 "Customer" means the end-user customer who purchases a Sequenom system
that includes Product(s).
1.7 "Cutoff period" has the meaning set forth in Section 4.3.
1.8 "Delivery Date" means the date on which delivery of Product(s) is
properly requested in a Purchase Order and accepted by PerSeptive.
1.9 "Discount Recapture" has the meaning set forth in Section 3.3.
1.10 "Intellectual Property Rights" has the meaning set forth in Section
4.11.
1.11 "Invoice" means a PerSeptive in voice issued to Sequenom in
accordance with the terms of this Agreement.
1.12 "Party" means Sequenom or PerSeptive; "Parties" means Sequenom and
PerSeptive. As used in this Agreement, references to "third parties" means
persons or entities other than a Party or its Affiliates.
1.13 "Products" means the current, specific Mass Spec Products identified
by PerSeptive's part numbers listed on Exhibit 2.1 attached hereto, a
general description of which is set forth opposite each such part number,
including the licenses required for the operation of the Products as
outlined in Section 13. Products shall also include any such products as
changed or modified by PerSeptive in a manner that does not substantially
alter the form, fit or function of any such product.
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1.14 "Projected Quantity" has the meaning set forth in Section 3.2.
1.15 "Purchase Order" means a Sequenom purchase order issued to PerSeptive
in accordance with the terms of this Agreement.
1.16 "Release date" has the meaning set forth in Section 4.3.
1.17 "Specifications" means information specifying the technical and
performance criteria for Products that is published in PerSeptive's
Standard Operating Procedure (SOP) documents in effect on the date Products
are shipped in response to a Purchase Order. Upon request, PerSeptive will
provide such documents to Sequenom under the confidentiality provisions of
Section 15.
1.18 "Trademarks" means PerSeptive's trademarks, logos, trade dress, etc.
which are affixed either to the Products or on the packages/containers in
which such Products are shipped, or which are included in written materials
relating to or mentioning the Products.
2. PRICE
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2.1 Exhibit 2.1 attached hereto sets forth the current published retail
prices ("List Price") for the Products and related installation and support
services and license fees, and the net sales price payable by Sequenom.
PerSeptive agrees to provide Products and services to Sequenom at prices
which reflect a discount ***
*** from List Price as more fully set forth in Exhibit 2.1.
PerSeptive shall provide Sequenom with at least ninety (90) days notice
of any pricing changes that may occur from time to time during the term of
this Agreement. Sequenom shall pay to PerSeptive for each Product ordered
pursuant to this Agreement an amount equal to the retail list price of such
Product, as set forth on the Exhibit 2.1 in effect at the time the order is
received by PerSeptive, less the discount applicable to such Product set
forth on Exhibit 2. 1.
2.2 Prices given in Exhibit 2.1 are exclusive of, and Sequenom shall be
responsible for the payment of, shipping charges (including freight and
insurance customs fees, installation, field service maintenance and support
(unless field service occurs within the warranty period), extended
warranty, as well as any applicable sales, use, service, value added and
similar taxes.
3. DISCOUNTS
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3.1 To qualify for the discounts set forth in Exhibit 2.1, Sequenom agrees
to purchase *** Products having ***
*** (a "System Product") over the three-year term of this
Agreement.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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3.2 Subject to the provisions of Section 4, on the Effective Date and on
or before three (3) months prior to the end of an Agreement Year, Sequenom
will issue a Purchase Order for the number of System Products that Sequenom
intends to purchase in the coming year. For each Agreement Year, the
projected quantity of System Products to be purchased by Sequenom
("Projected Quantity") is as follows:
Year 1 *** Products
Year 2 *** Products
Year 3 *** Products
3.3 To maintain the discount from list price of the Products as set forth
in Exhibit 2.1, Sequenom must order for delivery in any Agreement Year no
less than *** *** of the Projected Quantity
("Required Purchases"). If in any Agreement Year Sequenom does not meet its
quota of Required Purchases, the discount provided Sequenom shall be reduced
*** *** *** Such reduction in discount shall remain in effect until such
time as Sequenom shall have ordered in accordance with the terms of this
Agreement and released for delivery a sufficient quantity of System Products
to make up the prior year(s) deficiency(ies) and satisfy the current year's
pro rata Required Purchases.
3.4 Notwithstanding the provisions of Section 3.3, and subject to the last
sentence of this Section 3.4, all Invoices issued with respect to orders
for delivery placed by Sequenom under this Agreement shall reflect the
applicable discount set forth in Exhibit 2. 1. However, the dollar amount
equal to the Discount Recapture, if any, will be calculated by PerSeptive,
and notice thereof provided to Sequenom, within forty five (45) days after
the end of each Agreement Year, with any such amount being carried forward
from year to year during the term of this Agreement. At the end of the
second Agreement Year, PerSeptive will invoice Sequenom for any Discount
Recapture due, and Sequenom agrees to pay such invoice within thirty (30)
days of its issuance. If by the end of the second Agreement Year Sequenom
has ordered and released for delivery less than *** System Products,
PerSeptive may in its sole discretion discontinue or modify the discounts
set forth in Exhibit 2.1 on all future orders placed by Sequenom during the
term of this Agreement.
3.5 Notwithstanding any provision to the contrary as may be contained
herein, if at the end of the third Agreement Year Sequenom shall not have
ordered and released for delivery *** System Products, it shall be
obligated to purchase from PerSeptive within the next ninety (90) days that
number of System Products equal to the difference between the number of
System Products actually ordered by Sequenom and *** at a fully discounted
price equal to the discounted price set forth in Exhibit 2.1
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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4. ORDERS
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4.1 Orders for the purchase of Products hereunder shall be submitted to
PerSeptive on a Purchase Order and shall specifically reference this
Agreement. All orders are subject to acceptance by PerSeptive, which shall
not be unreasonably withheld. All terms and conditions of sale of Products
are set forth in this Agreement. In the event of a conflict between the
terms and conditions of this Agreement and the terms and conditions on a
Purchase Order or Invoice, the terms and conditions of this Agreement shall
prevail except for terms of a Purchase Order specifically designated by
PerSeptive as terms that supercede the inconsistent terms in this
Agreement.
4.2 Upon acceptance of a Purchase Order, PerSeptive shall use commercially
reasonable efforts to manufacture the Products in accordance with the
Specifications and to ship such Products in accordance with the delivery
requirements and Delivery Dates set forth in Section 6.
4.3 Purchase Orders will include the quantities and types of Products to
be purchased by Sequenom during the coming year together with an estimated
schedule of when such Products are to be released for delivery ("release
date"). Except for Products scheduled to be released within a rolling
three (3) month period from any calendar date (the "cutoff period"),
Sequenom may adjust the quantity, type and release date of the Products
listed on the Purchase Order at its discretion. The quantity and type of
Products scheduled to be released within the cutoff period can not be
altered.
4.4 PerSeptive's supply obligation hereunder will not extend to more that
*** *** of Sequenom's Projected Quantity of Products for the year in
question. If Sequenom's Product requirements for any quarter exceeds *** of
Sequenom's Projected Quantity of Products, PerSeptive and Sequenom will
discuss in good faith the additional amount, if any, that PerSeptive is
willing to supply consistent with its other obligations and Sequenom will
adjust its order accordingly. Sequenom shall reimburse PerSeptive promptly
upon request for all reasonable out of pocket costs and expenses, including
the cost of carrying increased inventory, to the extent caused by any
deviation in order quantities from the limits imposed by the preceding
sentence, and PerSeptive will act reasonably to mitigate any such costs and
expenses.
4.5 PerSeptive agrees to use its commercially reasonable efforts to
provide Sequenom with notice ninety (90) days in advance of (i) any changes
to the Products listed in Exhibit 2.1 that alter the form, fit or function
of the Product or (ii) the discontinuance of any Product. PerSeptive
reserves the right in its sole and absolute discretion to modify the form,
fit or function of any Product, or to otherwise modify any Product, and to
discontinue the manufacture of any Product except for Products which have
been discontinued PerSeptive shall remain obligated to fill orders as have
been placed by Sequenom that are subject to accepted Purchase Orders.
Sequenom reserves the right to terminate this contract with no penalty with
sixty (60) day written notice should the
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Confidential Treatment and filed separately with the Commission.
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Products change significantly thereby rendering the Products incompatible
with Sequenom's products or should the change adversely effect Sequenom's
ability to sell its products. Notwithstanding any such termination, Sequenom
shall remain obligated to purchase all Products subject to Purchase Orders
issued by Sequenom.
4.6 Sequenom hereby grants to PerSeptive and PerSeptive reserves a
purchase money security interest in each Product purchased hereunder, and
in any proceeds thereof, for all amounts owing to PerSeptive for or related
to the product. Upon request by PerSeptive, Sequenom shall sign any
document required for PerSeptive to perfect such security interest.
Payment in full of the purchase price of any Product purchased hereunder
shall release the security interest on that Product.
4.7 PerSeptive shall ship in accordance with PerSeptive's standard
practices. Sequenom may specify different shipping instructions, subject
to agreement by PerSeptive, provided that Sequenom will be subject to an
additional charge if the alternate method increases the cost of shipping
equal to the increased cost.
4.8 Unless otherwise agreed to in writing by PerSeptive, all Products
shall be packed, if appropriate, for shipment and storage in accordance
with PerSeptive's standard practices. All packing shall conform to
requirements of carrier's tariffs.
4.9 All Products are subject to PerSeptive's standard tolerances for
specifications. PerSeptive reserves the right to make substitutions and
modifications in the Specification of any Product, provided that such
substitutions or modifications do not materially affect the performance of
the Products.
4.10 All patents, copyrights, trade secrets and other intellectual
property rights (collectively, "Intellectual Property Rights") in or
related to the Products sold hereunder are and will remain the exclusive
property of PerSeptive or its licensors. Sequenom shall not hereby acquire
any Intellectual Property Rights in the Products except as expressly set
forth in this Agreement.
4.11 PerSeptive does not warrant the validity or enforceability of any
Intellectual Property Rights relating to any Products. PerSeptive warrants
and represents, however, that at the time of the sale it is not aware of
any infringement of any patents or patent applications or other
Intellectual Property Rights owned by third parties which would prevent
Sequenom from using or selling the Products.
4.12 PerSeptive shall have the sole and exclusive right to evaluate any
suit, claim or proceeding brought against Sequenom alleging that a Product
purchased by Sequenom from PerSeptive and sold hereunder infringes any
Intellectual Property Rights of others and to take any and all legal action
PerSeptive shall deem appropriate with respect thereto. PerSeptive will
pay any cost of damages finally awarded against Sequenom in any such
action. Sequenom shall have the right to participate and be represented in
any such suit by its own counsel at its own expense, but Sequenom shall not
agree to, and PerSeptive shall have no liability for, any settlement,
compromise or dismissal of such
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suit, or costs incurred in connection therewith, without PerSeptive's
consent. Should the use of any Products by Sequenom be enjoined, or if
PerSeptive believes that the use of the Products may infringe the
Intellectual Property Rights of others, PerSeptive may, at its option,
require Sequenom to discontinue the use of the allegedly infringing Product
and shall either (i) substitute an equivalent non-infringing Product, (ii)
modify the Product so that it no longer infringes but remains equivalent,
(iii) obtain for Sequenom, at PerSeptive's own expense, the right to
continue use of such Product, or (iv) refund the purchase price for such
Product. At PerSeptive's request, Sequenom shall promptly return the Product
to PerSeptive, at PerSeptive's expense. The foregoing states the entire
liability of PerSeptive for Intellectual Property Right infringement.
5. BACKORDERS
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5.1 Backorders are defined as orders for System Products (excluding any
piece, spare or similar component parts) that have not been fully received
at the designated delivery point within the guaranteed order lead-time,
subject to Section 6.1 below.
5.2 Backorders must show an approximate shipping date and indicate the
reason for such backorder.
5.3 PerSeptive is required to provide any backorders without any extra
service or delivery charges.
5.4 It is the responsibility of PerSeptive to manage backorders and
provide Sequenom, at no additional cost, with the required Products
designated in a Purchase Order and to ensure their timely delivery.
(i) In case of default, and after notifying PerSeptive, Sequenom may
obtain the equivalent Products from other suppliers.
(ii) PerSeptive will be responsible, for the cost difference between
the Products and the Products from other suppliers.
5.5 PerSeptive will be in default if the Products are backordered for more
than ten (10) working days, or if Sequenom feels that the approximate
shipping date provided by PerSeptive for the backordered Product(s)
jeopardizes Sequenom's commercial operations and the operation of its
Customers.
6. DELIVERY
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6.1 PerSeptive shall use commercially reasonable efforts to deliver
Products to Sequenom on or within five (5) business days after the Delivery
Dates set forth in Purchase Orders accepted by PerSeptive. Unless
PerSeptive otherwise agrees, all Delivery Dates shall be ninety (90) days
or more from the date the Purchase Order is delivered to PerSeptive.
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6.2 In the event circumstances of force majeure as defined in Section 19.1
exist which would prevent or delay delivery of Products by PerSeptive,
PerSeptive shall have the right to apportion Products available for
delivery among its various customers.
7. SHIPMENT AND RISK OF LOSS
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7.1 All Products delivered pursuant to the terms of this Agreement shall
be F.O.B. PerSeptive manufacturing Plant, freight and insurance prepaid and
added to the invoice, to Sequenom's address or other place of delivery as
designated time to time by Sequenom, provided, however, that if delivery is
requested to a site other than Sequenom's address set forth in Section 18,
Sequenom shall be responsible to qualify delivery to such other site by
specifying in sufficient detail to PerSeptive all of the necessary shipping
and installation requirements for such site. Sequenom shall indemnify and
hold PerSeptive harmless, including the reimbursement of all reasonable
expenses incurred by PerSeptive, as a result of Sequenom's failure to
properly qualify delivery. Sequenom shall use its best efforts to assist
PerSeptive in arranging any desired insurance (in amounts that Sequenom
shall determine) and transportation, via airfreight unless otherwise
specified in writing, to any destinations specified in writing from time to
time. All customs, duties, costs, taxes, insurance premiums, and other
expenses relating to such transportation and delivery shall be at
Sequenom's expense.
7.2 Title, with the exception of certain technology that is licensed to
Sequenom as provided in this Agreement, and risk of loss with respect to
all Products shall pass from PerSeptive to Sequenom upon transfer to the
carrier.
8. INSTALLATION AND ACCEPTANCE
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8.1 Installation of Products by PerSeptive may be purchased by Sequenom at
the time of issuance of a Purchase Order by including a statement that
installation by PerSeptive of the designated Product is requested, or at
any other time. If a Purchase Order with installation by PerSeptive
included is accepted by PerSeptive, PerSeptive shall install the Product,
in accordance with PerSeptive's then standard installation practice, at the
Customer location or Sequenom's location, as designated on the Purchase
Order or as otherwise agreed. The cost of installation for the Product in
question will be included on the Purchase Order and may be invoiced by
PerSeptive with the invoice for the Product, or when installation by
PerSeptive is otherwise agreed to, may be separately invoiced by
PerSeptive, at PerSeptive's discretion. PerSeptive will use commercially
reasonable efforts to schedule and complete installation in a timely
fashion. PerSeptive and Sequenom will cooperate with each other to
coordinate each other's installation efforts.
8.2 For Products installed by PerSeptive, PerSeptive shall have no
obligation to integrate the Product with any product of Sequenom, who shall
be solely responsible for system integration.
8.3 For Products installed by PerSeptive, installation shall be complete,
and acceptance by Sequenom shall occur, when the Product passes
PerSeptive's standard
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installation and test procedures in effect at the time of installation. For
Products that are not installed by PerSeptive, acceptance by Sequenom occurs
upon shipment and will be deemed to have occurred unless Sequenom
demonstrates within thirty (30) days after delivery that the Product does
not pass PerSeptive's standard installation and test procedures or satisfy
the applicable Specifications, in which case acceptance occurs when such
procedures are passed. Sequenom shall notify PerSeptive in writing of its
rejection of the Product, specifying in sufficient detail the nature of the
problem, and shall await PerSeptive's instructions with regard to
disposition of the rejected Product which shall come no less than forty
eight (48) hours after receiving the notification. PerSeptive shall use its
reasonable best efforts to either repair on-site or off site, or, at its
option, to replace the rejected Product with conforming Product. In any
event, a Product that passes PerSeptive's standard installation and test
procedures shall be at the Customer's facility as soon as commercially
feasible. PerSeptive will use its reasonable commercial efforts to provide a
Product that passes such tests no later than ten (10) working days after the
initial Product failed the installation and test procedures. If instructed
by PerSeptive, and upon receipt by Sequenom of a return authorization from
PerSeptive, Sequenom shall ship back to PerSeptive any defective Product or
any component thereof at Sequenom's cost. PerSeptive shall ship any
replacement product back to Sequenom or the Customer at PerSeptive's cost.
Refund including any freight and insurance costs incurred for authorized
returned Products, repair or replacement shall be Sequenom's remedy for any
rejection of any Product. Products may not be returned to PerSeptive under
any circumstances without PerSeptive's prior written authorization. Any
Product not repairable on-site and returned hereunder to PerSeptive may be
conformed to comply with the Specifications at PerSeptive's facilities and
thereafter used to fill a future Sequenom order.
9. TRAINING
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9.1 PerSeptive commits to train, tuition free, two (2) designated Sequenom
employees in the installation and routine maintenance of the Products. The
training will be conducted concurrently in a single class of two (2) weeks
duration at PerSeptive's facility as part of PerSeptive's standard training
programs and will be scheduled and executed within one hundred twenty (120)
days of the Effective Date. Sequenom may request from time to time due to
employee changes or increased customer demand, and PerSeptive shall grant,
additional training of the type set forth above. The training will be
scheduled on a mutually agreed upon basis and shall be invoiced to Sequenom
at a rate of ***
10. PAYMENT
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10.1 Upon or after delivery of the Product to the F.O.B. point, PerSeptive
shall submit an Invoice therefor. Sequenom agrees to pay the amount of
Invoices submitted by PerSeptive within thirty (30) days from date of
Invoice.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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10.2 If payment is not received by the due date, a service charge may be
added at the rate of 1.5 % per month (18% per year) or the maximum legal
rate, whichever is less, to unpaid invoices from the due date thereof.
Sequenom agrees to pay such service charges and agrees to reimburse
PerSeptive reasonable attorney's fees and other out of pocket expenses of
collection if PerSeptive engages counsel and/or incurs expenses to collect
overdue amounts.
10.3 In the event that Sequenom shall fail to pay any past due Invoice
within ten (10) days of receipt of notice from PerSeptive, PerSeptive may,
at any time and in its sole discretion, limit or cancel the credit of
Sequenom as to time and amount, and as a consequence, may demand full
payment or partial payment before delivery of any unfilled Purchase Order
of this Agreement, and may demand assurance of Sequenom's due performance.
Upon making such demand, PerSeptive may suspend production, shipment,
and/or deliveries. If, within the period stated in such demand, but in no
event longer than thirty (30) days, Sequenom fails to agree and comply with
such different terms of payment, and/or fails to give adequate assurance of
due performance, PerSeptive may (i) by notice to Sequenom, treat such
failure or refusal as a repudiation by Sequenom of the accepted Purchase
Orders not then fully performed, whereupon PerSeptive may cancel all
further deliveries and any amounts unpaid hereunder shall immediately
become due and payable; or (ii) make shipments under reservation of a
security interest and demand payment against tender of documents of title.
11. RESALE RESTRICTIONS
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11.1 PerSeptive hereby grants a right to Sequenom to resell the Products,
bundled with the Sequenom system as described in Section 1 1.2, only to
locations ***
***
***
***
*** . If a location other than those listed above is designated as the
place of installation on a Purchase Order accepted by PerSeptive, the
parties shall be deemed to have agreed on such other location.
11.2 It is the intention of the parties that this Agreement represents a
value added resale business relationship. Accordingly, Sequenom's resale
of Products shall be in conjunction with other Sequenom products,
***
***. Sequenom shall have no right to resell any Product purchased
hereunder as a stand-alone Mass Spec Product, and any attempt to do so
shall be deemed a material breach of this Agreement by Sequenom for which
there is no right of cure, notwithstanding anything contained in this
Agreement to the contrary.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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11.3 As set forth in Section 15.1, the price of Products payable by
Sequenom pursuant to this Agreement is Confidential Information of
PerSeptive, and Sequenom shall not furnish such price in any quote of any
Sequenom system that includes a Product, or quote other items separately so
that such price can be deduced, or otherwise disclose such price to any
third party.
12. WARRANTY
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12.1 PerSeptive warrants that the Products will conform to the
Specifications at the time of delivery and will be free from defects in
materials and workmanship for a period of six (6) months. The warranty
period begins on the date of installation if the Products are installed by
PerSeptive, but in no event later than thirty (30) days after shipment, or
otherwise on the date of delivery. The foregoing warranties do not include
periodic maintenance or calibration recommended for some Products, unless
specifically covered in the express written warranty terms, if any,
accompanying the delivery of such Products. To the extent then generally
available to PerSeptive customers, Sequenom may purchase extended support
coverage or a service contract on Products purchased pursuant to this
Agreement at PerSeptive's then applicable retail rate, less *** .
12.2 If PerSeptive receives notice of defects or nonconformance to the
Specifications during the warranty period, PerSeptive will, at its option,
repair (and recalibrate o *** nly as necessitated by repairs) or replace
the affected Products. If PerSeptive is unable, within the times
designated in Section 12.6, to repair, replace or correct a defect or non-
conformance in a Product to a condition as warranted, Sequenom will be
entitled to a refund of the purchase price upon prompt return of the
Product to PerSeptive. PerSeptive will pay expenses for shipment of both
defective and repaired or replacement Products.
12.3 The above warranties do not apply to defects resulting from improper
or inadequate maintenance or calibration by Sequenom or its Customers;
Sequenom or third party supplied hardware or software, interfacing or
supplies; unauthorized modification; improper use or operation outside of
the Specifications for the Product; abuse, negligence, accident, loss or
damage in transit; improper site preparation; or unauthorized maintenance
or repair.
12.4 Sequenom's sole remedies under PerSeptive's warranty shall be limited
to repair or replacement of the Product that failed to conform to such
warranty, or refund of the purchase price of the Product. Repair,
replacement or refund shall be at the sole discretion of PerSeptive.
12.5 THE FOREGOING WARRANTIES ARE EXCLUSIVE AND NO OTHER WARRANTY, EXPRESS
OR IMPLIED, IS GIVEN BY PERSEPTIVE, INCLUDING THOSE OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, ALL OF WHICH ARE EXPRESSLY DISCLAIMED.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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12.6 All Product defects or suspected defects during the warranty period
will be managed by an authorized Sequenom representative (who has undergone
training as provided in Section 9) who shall place a call to PerSeptive's
designated service center followed up with the description of the Product
problem in sufficient detail as to allow PerSeptive to assess the source of
the problem. All service calls placed by Sequenom will be responded to
either by fax or by phone within two (2) business days with a proposed
remedy to the Customer's problem being determined by PerSeptive as soon as
commercially feasible after Sequenom's initial service call. PerSeptive
will use its reasonable commercial efforts to see to it that the Customer's
Product is either fully operational or that a replacement instrument is
delivered to the Customer if it is determined that an on-site repair is not
possible with the allotted time within ten (10) business days of the
initial service call. Any Product not repairable on-site and returned
hereunder to PerSeptive may be conformed to comply with the Specifications
at PerSeptive's facilities and thereafter used to fill a future Sequenom
order.
13. LICENSE RIGHTS
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13.1 The Products purchased pursuant to this Agreement are described and
claimed in one or more of the following U.S. Patents:
*** , as well as in corresponding foreign patents and
patent applications *** . The price of each Product includes
*** of its list price, ***
*** ***
*** ***
and to extend such license solely to those Customers of Sequenom who
purchase such Product as part of a Sequenom system. Any such sublicense
extended to its Customers by Sequenom as provided herein must incorporate
the terms of the license provided in this Section 13.1 in a written
sublicense agreement acceptable to PerSeptive in form and substance, which
will be made available to PerSeptive upon request. No other license is
granted to Sequenom either directly or by implication, estoppel or
otherwise by PerSeptive under this Section 13. 1.
13.2 PerSeptive represents that it is the exclusive licensee, with the
right to sublicense, of U.S. Patent Nos. 5,288,644; 5,453,247; and
5,643,798, and the nonexclusive licensee, with right to sublicense, subject
to certain rights of the licensor to recapture exclusive rights, of U.S.
Patent No. 5,045,694 (collectively, the "DNA Patents"). PerSeptive grants
a *** sublicense to Sequenom, upon the purchase of the Product,
***
*** in the DNA Patents, thereby providing Sequenom the freedom to
*** the Product, under the DNA
Patents, and to sublicense such rights solely to those Customers of
Sequenom who purchase such Product as part of a Sequenom system. The price
of each Product *** ***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
12
per product. Any sublicense extended to its Customers by Sequenom as
provided herein must incorporate the terms of the license provided in this
Section 13.2 in a written sublicense agreement acceptable to PerSeptive in
form and substance, which will be made available to PerSeptive upon
request. No other license is granted to Sequenom either directly or by
implication, estoppel or otherwise by PerSeptive under this Section 13.2.
13.3 PerSeptive hereby grants to Sequenom a limited license to use and
modify the Delayed Extraction technology and the DNA Patents only to the
extent necessary and solely for the purposes of internal use, testing and
marketing.
14. TRADEMARKS; PROMOTIONAL MATERIALS
---------------------------------
14.1 PerSeptive hereby grants Sequenom a non-transferable,
nonsublicensable, nonexclusive license to use the Trademarks, without
modification unless approved by PerSeptive as set forth in Section 14.2,
solely in connection with Sequenom with Sequenom marketing, and
distribution of the Products and Sequenom system. Sequenom may place its
own trademarks and brand identification on the Products it purchases
hereunder provided that (i) Sequenom's trademarks and identification are
displayed in a size no greater than of those of PerSeptive and (ii)
Sequenom's trademarks and identification are placed on the Products in a
manner that is not likely to cause confusion with PerSeptive's trademarks
and brand identification.
14.2 Within thirty (30) days of the Effective Date, Sequenom will submit
for approval by PerSeptive, which shall not be unreasonably withheld, a
design layout showing the use of Sequenom's trademarks and brand
identification on the Products. Any subsequent changes to such layout will
similarly require PerSeptive's approval.
14.3 All advertisements and other promotional materials and other
descriptions of systems that include Products published by Sequenom shall
include a notation that the Products have been manufactured by PerSeptive
under agreement with Sequenom and an indication of the applicable license
rights accompanying the sale of Products as set forth in Sections 13.1 and
13.2.
15. CONFIDENTIALITY
---------------
15.1 During the term of this Agreement, all Confidential Information
exchanged or developed under this Agreement shall be kept strictly
confidential by either party and shall not be used by either party nor
disclosed by either party to any third party for any purpose except those
of this Agreement and within either party's own organization only to
employees or consultants who have undertaken a similar obligation for the
time during and after the term of their employment or consulting contract.
This obligation shall not extend to any Confidential Information that is
now or subsequently becomes part of the public domain through no breach of
this Agreement. By way of example but not by way of limitation, all
information relating to PerSeptive's sale of Products (e.g., price,
quantity, discount, delivery schedule, Product improvements, SOP documents,
operation
13
manuals, schematics, design specifications, manufacturing procedures, etc.)
and Specifications shall be deemed PerSeptive's Confidential Information.
15.2 The provisions of Section 15.1 shall survive any termination of this
Agreement and continue in force for a period of five (5) years following
the effective date of any such termination.
16. LIMITATION OF LIABILITY; INDEMNIFICATION
----------------------------------------
16.1 Except solely with respect to damages for personal injury caused by
PerSeptive's negligence or willful misconduct, PerSeptive's liability
arising out of this Agreement, including without limitation on account of
any breaches or default, or from or on account of any Products sold
pursuant to this Agreement, or the use thereof, arising from whatever
cause, whether tort, breach of contract, warranty, or otherwise, excepting
solely fraud, is limited to one million dollars ($1,000,000) in the
aggregate. This Section does not limit liability for bodily injury of a
person.
16.2 NOTWITHSTANDING ANYTHING CONTAINED IN THIS AGREEMENT TO THE CONTRARY,
IN NO EVENT SHALL PERSEPTIVE BE LIABLE, WHETHER IN CONTRACT, TORT,
WARRANTY, OR UNDER ANY STATUTE (INCLUDING WITHOUT LIMITATION ANY TRADE
PRACTICE, UNFAIR COMPETITION OR OTHER STATUTE OF SIMILAR IMPORT) OR ON ANY
OTHER BASIS, FOR INDIRECT, PUNITIVE, MULTIPLE, INCIDENTIAL, CONSEQUENTIAL
OR SPECIAL DAMAGES SUSTAINED BY SEQUENOM OR ANY OTHER PERSON ARISING OUT OF
OR IN CONNECTION WITH ANY ASPECT OF THIS AGREEMENT OR ITS PERFORMANCE OR
ANY FAILURE IN PERFORMANCE OR BREACH, OR THE USE OR PERFORMANCE, OR
CONSEQUENCES OF USE OR PERFORMANCE, OF ANY PRODUCTS MANUFACTURED OR
FURNISHED BY PERSEPTIVE WHETHER OR NOT FORESEEABLE AND WHETHER OR NOT
PERSEPTIVE IS ADVISED OF THE POSSIBILITY OF SUCH DAMAGE, INCLUDING, WITHOUT
LIMITATION, DAMAGES ARISING FROM OR RELATED TO LOSS OF USE, LOSS OF DATA,
FAILURE OR INTERRUPTION IN THE OPERATION OF ANY EQUIPMENT OR SOFTWARE,
DELAY IN REPAIR OR REPLACEMENT, OR FOR LOSS OF REVENUE OR PROFITS, LOSS OF
GOODWILL, OR LOSS OF BUSINESS UNLESS EXPLICITLY PROVIDED FOR HEREIN.
16.3 Sequenom agree to defend PerSeptive and its Affiliates at its cost
and expense, and will indemnify and hold PerSeptive, its Affiliates and
their respective directors, officers, employees and agents (the "PerSeptive
Indemnified Parties") harmless from and against any liabilities, losses,
costs, damages, fees or expenses (including reasonable attorney's fees)
arising out of any claim relating to (i) any breach by Sequenom of any of
its representations, warranties or obligations pursuant to this Agreement
or (ii) personal injury or property damage from the use, sale or other
disposition of any Product or service offered by Sequenom and/or its
respective licensees or collaborators or (iii)
14
the negligence or willful misconduct of Sequenom, except in all cases to the
extent caused by the negligence or Willful misconduct of PerSeptive.
16.4 PerSeptive agrees to defend Sequenom and its Affiliates at its cost
and expense, and will indemnify and hold Sequenom, its Affiliates and their
respective directors, officers, employees and agents (the "Sequenom
Indemnified Parties") harmless from and against any liabilities, losses,
costs, damages, fees or expenses (including reasonable attorney's fees)
arising out of any claim relating to (i) any breach by PerSeptive of any of
its representations, warranties or obligations pursuant to this Agreement
or (ii) personal injury or property damage from the negligent development
and manufacture of any Product or service offered by PerSeptive or its
licensees or collaborators or (iii) the negligence or willful misconduct of
PerSeptive, except in all cases to the extent caused by the negligence or
willful misconduct of Sequenom.
16.5 Whenever any claim shall arise for indemnification hereunder, the
party seeking indemnification (the "Indemnified Party") shall promptly
notify the party from whom indemnification is sought (the "Indemnifying
Party"). Such notice shall specify the nature of the claim and, when
known, the facts constituting the basis for, as well as the amount or an
estimate of the amount of the liability arising from, such claim. Failure
to promptly notify shall not relieve a Party from its indemnity obligations
hereunder except to the extent of prejudice caused by such failure. The
Indemnified Party shall not settle or compromise any claim by a third party
for which it is entitled to indemnification hereunder without the prior
written consent of the Indemnifying Party, which shall not be unreasonably
withheld, unless suit shall have been instituted against it and the
Indemnifying Party shall not have taken control of such suit after
notification thereof as provided in Section 16.6.
16.6 In connection with any claim giving rise to indemnity under Section
16 of this Agreement, the Indemnifying Party at its sole cost and expense
may, upon written notice to the Indemnified Party, assume the defense of
any such claim or legal proceeding if it acknowledges to the Indemnified
Party in writing its obligations to indemnify the Indemnified Party with
respect to all elements of such claim. The Indemnified Party shall be
entitled to participate in (but not control) the defense of any such
action, with its counsel and at its own expense. If the Indemnifying Party
does not assume the defense of any such claim or litigation resulting
therefrom within thirty (30) days after the date notice of such claim is
given, the Indemnified Party may defend against such claim or litigation,
without prejudice to pursue its rights of indemnity. In such event, the
Indemnified Party may defend in a manner as it may deem appropriate,
including, but not limited to, settling such claim or litigation, but only
after giving written notice of the same to the Indemnifying Party, on such
terms as the Indemnified Party may deem appropriate, and the Indemnifying
Party shall be entitled to participate in (but not control) the defense of
such action, with its counsel and at its own expense. The Parties shall
cooperate with each other in the defense of any such third party claim
pursuant to this Section 16.
15
17. TERM AND TERMINATION
--------------------
17.1 The term of this Agreement shall be for the period beginning on the
Effective Date and ending three (3) years thereafter.
17.2 This Agreement shall terminate upon written notice by one Party to
the other in the event the other Party shall become insolvent, or shall ask
its creditors for a moratorium, or shall file a voluntary bankruptcy
petition, or shall suffer appointment of a temporary or permanent receiver,
trustee, or custodian, for all or a substantial part of its assets who
shall not be discharged within sixty (60) days.
17.3 Either Party may terminate this Agreement for default by the other
Party to perform any of its obligations under this Agreement by notifying
the other Party in writing of such default and allowing the other party
thirty (30) days within which to cure such default, unless the default is
the failure to pay money, in which case the defaulting party shall have
only five days to cure such default after receiving written notice of
nonpayment. If such default is not cured within thirty (30) days from
receipt of such notice of default (or five (5) days in the case of non-
payment of money owed), the non-defaulting party may terminate this
Agreement by written notice to the defaulting party.
17.4 Except to the extent expressly provided to the contrary, the
following provisions shall survive the termination of this Agreement: this
Section 17.4, Section 15, Section 16, Section 18, and Section 19. Any
rights of Seller to payments accrued through termination as well as
obligation of the parties under firm orders for purchase and delivery of
Products at the time of such termination shall remain in effect, except
that in the case of termination under Section 17.3, the terminating party
may elect whether obligations under firm orders will remain in effect and
except that PerSeptive will have no obligation to manufacture and deliver
Products that have Delivery Dates more than six (6) months after the date
of termination.
18. NOTICES
-------
18.1 All notices and requests required or authorized hereunder shall be
given in writing either by personal delivery; by registered or certified
mail, return receipt requested; or by fax or telex. Such notice shall be
deemed to have been given upon, such date that it is so personally
delivered; the date three (3) days after it is deposited in the mail; or
the date the same is received by the receiving party's fax or telex
machine, irrespective of the date appearing therein.
If to PerSeptive: If to Sequenom:
PerSeptive Biosystems, Inc. Sequenom, Inc.
000 Xxx Xxxxxxxxxxx Xxxx 00000 Xxxxxxxx Xxxxxx Xxxx, Xxxxx X
Xxxxxxxxxx, XX 00000 Xxx Xxxxx, XX 00000-0000
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
16
Attention: General Counsel Attention: Business Development
Tel: (000) 000-0000 Tel: (000) 000-0000
Fax: (000) 000-0000 Fax: (000) 000-0000
19. GENERAL
-------
19.1 Force Majeure
Except with respect to the payment of money, neither party shall be liable
for any failure or delay in its performance under this Agreement due to
causes, including, but not limited to, acts of God, acts of civil or
military authority, fires, epidemics, floods, earthquakes, riots, wars,
sabotage, labor shortages or disputes, and governmental actions, which are
beyond its reasonable control; provided that the delayed party: (i) gives
the other party written notice of such cause and (ii) uses its reasonable
efforts to correct such failure or delay in its performance. The delayed
party's time for performance or cure under this Paragraph 19.1 shall be
extended for a period equal to the duration of the cause.
19.2 Relationship of Parties
The parties to this Agreement are independent contractors. Neither party
nor their respective employees, consultants, contractors or agents are
agents, employees or joint ventures of the other, nor do they have any
authority to bind the other by contract or otherwise to any obligation.
Neither party will not represent to the contrary, either expressly,
implicitly, by appearance or otherwise.
19.3 Assignment
Neither PerSeptive, on one hand, nor Sequenom, on the other hand, may
assign this Agreement in whole or in part without the consent of the other,
except if such assignment occurs in connection with the sale or transfer of
all or substantially all of the business and assets of PerSeptive, on the
one hand, or Sequenom, on the other, to which the subject matter of this
Agreement pertains. Notwithstanding the foregoing, any Party may assign
its rights (but not its obligations) pursuant to this Agreement in whole or
in part to an Affiliate of such Party.
19.4 Successors in Interest
Subject to Section 19.3, the rights and liabilities of the parties hereto
will bind and inure to the benefit of their respective successors,
executors and administrators, as the case may be.
19.5 Applicable Law
This Agreement shall be governed by and construed in accordance with the
laws of the Commonwealth of Massachusetts, U.S.A, exclusive of its
conflicts of law rules. Any litigation or other dispute resolution between
the parties relating to this Agreement shall
17
take place in the District of Massachusetts. The parties consent to the
personal jurisdiction of and venue in the state and federal courts within
that District.
19.6 Severability
If for any reason a court of competent jurisdiction finds any provision of
this Agreement, or portion thereof, to be unenforceable, that provision of
the Agreement shall be enforced to the maximum extent permissible so as to
effect the intent of the parties, and the remainder of this Agreement shall
continue in full force and effect.
19.7 No Waiver
Failure by either party to enforce any provision of this Agreement shall
not be deemed a waiver of future enforcement of that or any other
provision.
19.8 Counterparts
This Agreement may be executed in one or more counterparts, each of which
will be deemed an original, but all of which will constitute but one and
the same instrument.
19.9 Complete Agreement
This Agreement, including all Exhibits, constitutes the entire agreement
between the parties with respect to the subject matter hereof, and
supersedes and replaces all prior or contemporaneous understandings or
agreements, written or oral, regarding such subject matter. No amendment
to or modification of this Agreement shall be binding unless in writing and
signed by a duly authorized representative of both parties.
19.10 Third Party Beneficiaries
No third party beneficiary rights are conferred or are intended to be
conferred by this Agreement.
19.11 Headings
Headings in this Agreement are for convenience only, and shall not be used
to and shall not effect the meaning or interpretation of this Agreement.
19.12 Full Disclosure
Any representations made by the Parties in this Agreement or any Exhibit
hereto do not contain any untrue statement of a material fact or omit any
material fact necessary in order to make the statements contained therein
misleading.
18
19.13 Public Announcements
Any announcements or similar publicity with respect to the execution of
this Agreement shall be agreed upon among the Parties in advance of such
announcement. All Parties understand that this Agreement is likely to be
of significant interest to investors, analysts and others, and that any of
the Parties therefore may make such public announcements with respect
thereto. The Parties agree that any such announcement will not contain
confidential business or technical information and, if disclosure of
confidential business or technical information is required by law or
regulation, will make reasonable efforts to minimize such disclosure and
obtain confidential treatment for any such information which is disclosed
to a governmental agency or group. Each Party agrees to provide to the
other Parties a copy of any public announcement as soon as reasonably
practicable under the circumstances prior to its scheduled release. Except
under extraordinary circumstances, each Party shall provide the other with
an advance copy of any press release at least five (5) business days prior
to the scheduled disclosure. Each Party shall have the right to
expeditiously review and recommend changes to any announcement regarding
this Agreement or the subject matter of this Agreement. Except as
otherwise required by law, the Party whose press release has been reviewed
shall remove any information the reviewing Party reasonably deems to be
inappropriate for disclosure.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first indicated above.
PerSeptive Biosystems, Inc. Sequenom, Inc.
By: /s/ Xxxxxx X. Xxxxxxxxxxx By: /s/ Xxxxxx Xxxxxx
------------------------- -------------------------
Name: Xxxxxx X. Xxxxxxxxxxx Name: Xxxxxx Xxxxxx
Title: VP/ General Manger Title: President & CEO
Legal: A.T. Karnalirs
19
EXHIBIT 2.1
Product Price and Discount Schedule
Part No. Description *** *** ***
----------------------------------------------------------------------------------------------------------------------
V888520 Voyager-DE Biospectrometry Workstation with Data ***
System*
License Fee for DNA Patents
----------------------------------------------------------------------------------------------------------------------
V700454 500 MHz Acquisition System* ***
----------------------------------------------------------------------------------------------------------------------
V999999 Negative Ion Capability ***
----------------------------------------------------------------------------------------------------------------------
V700388 Sample Video Monitor System ***
(US, Canada and Japan Only)
----------------------------------------------------------------------------------------------------------------------
V700718 Sample Video Monitor System ***
(EU and rest of world)
----------------------------------------------------------------------------------------------------------------------
V700715 High Current Detector for Voyager-DE
(factory installed)
----------------------------------------------------------------------------------------------------------------------
V888630 Voyager-DE PRO Biospectrometry Workstation with Data ***
System (US Canada and Japan only)*
License Fee for DNA Patents
----------------------------------------------------------------------------------------------------------------------
V899630 Voyager-DE PRO Biospectrometry Workstation with Data ***
System (EU and rest of world)*
License Fee for DNA Patents
----------------------------------------------------------------------------------------------------------------------
V725113 2 GHz Acquisition System* ***
----------------------------------------------------------------------------------------------------------------------
V700400 CID Module ***
----------------------------------------------------------------------------------------------------------------------
V700716 High Current Detector for Voyager-DE PRO ***
(factory installed)
----------------------------------------------------------------------------------------------------------------------
N/A Installation for Voyager-DE Workstation** ***
----------------------------------------------------------------------------------------------------------------------
N/A Installation for Voyager-DE PRO Workstation** ***
----------------------------------------------------------------------------------------------------------------------
N/A Field Labor Support Rate ***
----------------------------------------------------------------------------------------------------------------------
N/A Extended Support for Voyager-DE Workstation ***
a) BioMaintenance Plan
b) BioAssurance Plan
c) BioAssurance Plus Plan
----------------------------------------------------------------------------------------------------------------------
N/A Extended Support for Voyager-DE PRO Workstation *** ***
a) Maintenance Plan
b) BioAssurance Plan
c) BioAssurance Plus Plan
----------------------------------------------------------------------------------------------------------------------
* Minimum Required Configuration for System Product
** Includes Travel Expenses
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
20
